Ex Parte Reynolds et al

Patent Trial and Appeal Board

Jul 30, 2018

12700455 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/700,455 02/04/2010
71331 7590
NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
08/01/2018
FIRST NAMED INVENTOR
Jeffery S. Reynolds
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
247082-143USC1/2734PCTUSN 7889
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
08/01/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFERYS. REYNOLDS and JOHN P. CREA VEN
Appeal2017-011606 1
Application 12/700,4552,3
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 188-190, 192-206, and 208. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this opinion, unless specified otherwise, we refer to the
Appellants' Appeal Brief ("Br.," filed Mar. 8, 2017), and to the Examiner's
Answer ("Ans.," mailed June 27, 2017) and Final Office Action ("Final
Act.," mailed Sept. 23, 2016).
2 According to the Appellants, "[t]he real party in interest is Ascensia
Diabetes Care Holdings AG." Br. 2.
3 The application before us was the subject of a previous decision of the
Board (Ex parte Reynolds et al., Appeal No. 2013-007177 (PTAB July 2,
2015)).
Appeal 2017-011606
Application 12/700,455
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 188, 193, and 202 are the independent claims on appeal.
Claim 188, reproduced below, is illustrative of the subject matter on appeal.
188. A cartridge comprising:
a housing forming exactly one opening therethrough;
a plurality of test sensors being stacked in the housing,
each of the plurality of test sensors being adapted to assist in
testing at least one analyte;
a mechanical mechanism being adapted to urge the
plurality of test sensors in a first direction such that at least one
of the plurality of test sensors is positioned for extraction from
the cartridge;
a test-sensor extractor being adapted to move between a
first position and a second position; and
a lid being mechanically linked to the test-sensor extractor,
the lid being moveable between a closed position and an open
position such that the lid seals the opening in the closed position,
wherein movement of the test-sensor extractor from the
first position to the second position moves the lid from the closed
position to the open position and extracts at least one of the
plurality of test sensors at least partially through the opening.
Rejections
Claims 188-190, 192-198, 202-206, and 208 are rejected under
35 U.S.C. § I02(b) as anticipated by Maisey et al. (US 2002/0057993 Al,
pub. May 16, 2002) (hereinafter "Maisey").
Claim 199 are rejected under 35 U.S.C. § I03(a) as unpatentable over
Maisey and Moerman et al. (US 2003/0191415 Al, pub. Oct. 9, 2003)
(hereinafter "Moerman").
Claims 200 and 201 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Maisey and Otake (US 6,881,578 B2, iss. Apr. 19, 2005).
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Application 12/700,455
ANALYSIS
Independent Claim 188 and Dependent Claims 189, 190, 192, and 194-201
The Appellants assert that "[ t ]he feed barrel 4 of Maisey includes
several components including a recessed portion 12, a magazine door 52, a
door seal 66, a plurality of fingers 54, pivot point 56, arms 58, an actuating
member 60, a pair of spaced apart arms 68, a pair of spaced apart fingers 64
and a blade 62." Br. 8-9 (citing Maisey ,r 65, Figs. 14--19).
We agree with the Appellants that feed barrel 4 includes recessed
portion 12. Indeed, recessed portion 12 is a receding part/space of feed
barrel 4. Maisey, Figs. 14--19, ,r,r 64--65; see also id. at Figs. la, 4a, ,r 56
("feed barrel 4 has a recessed portion 12").
We disagree with the Appellants that feed barrel 4 includes magazine
door 52 or door seal 66 as Maisey describes "feed barrel 4 is provided with a
separate magazine door 52 which has a door seal 66." Maisey ,r 65
( emphasis omitted). We do not understand "provided with a separate
magazine door 52" in the foregoing sentence to be tantamount to "includes,"
such that magazine door 52 would be part of feed barrel 4. We note that the
Appellants' assertion that feed barrel 4 includes magazine door 52 lacks a
cogent explanation. See Br. 8-10.
The Appellants argue that the Examiner erred in finding that feed
barrel 4 corresponds to the claimed "test-sensor extractor." Id. at 8. The
Appellants assert that recessed portion 12 should correspond to the claimed
"test-sensor extractor" because "[t]he actual component in Maisey that
extracts the test sensor is the recessed portion 12 that receives and transports
a single test strip from a start potion to an engagement location." Id. at 9
( citing Maisey, Figs. la, 1 b, ,r,r 56, 65). The Appellants' assertion is not
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Application 12/700,455
persuasive. Recessed portion 12 is a receding space of feed barrel 4. As
such, we agree with the Examiner that feed barrel 4 corresponds to the
claimed "test-sensor extractor."
The Appellants point out that "claim 18 8 requires the lid to be
mechanically linked to the test-sensor extractor." Id. at 10. The Appellants
argue that the Examiner applies Maisey such that "the sub-component (the
magazine door 52) is 'mechanically linked' to the component as a whole
(the feed barrel 4)." Id. Additionally, based on the assertion that magazine
door 52 is a sub-component of feed barrel 4, the Appellants analogize the
present case to Cutsforth, Inc. v. Motivepower, Inc., 643 Fed. Appx. 1008
(Fed. Cir. 2016) (non-precedential). Id. at 9-10. The Appellants' argument
is not persuasive of Examiner error. We disagree with the Appellants that
magazine door 52 is a sub-component of a whole (i.e., feed barrel 4). Supra.
Rather, we agree with the Examiner that feed barrel 4 and magazine door 52
are separate elements from one another. See Ans. 4. Moreover, the
Examiner's finding "that a mechanical linkage takes place where the
extractor ( 4) is rotated, causing the fingers ( 64) of the extractor to pull on
arm member (58) which is attached to the door (52) causing it to rotate away
from the opening" (id.) is adequately supported.
The Appellants argue that Maisey fails to disclose claim 18 8 's
recitation, "wherein movement of the test-sensor extractor from the first
position to the second position moves the lid from the closed position to the
open position and extracts at least one of the plurality of test sensors at least
partially through the opening." Br. 7 (emphasis added). The Appellants
assert that "the opposite occurs in Maisey when the test-sensor extractor
(recess 12) moves and extracts a test strip at least partially through the
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Appeal 2017-011606
Application 12/700,455
opening, resulting in the lid ( door 52) being moved from an open position to
a closed position." Id. at 8. The Appellants' argument is not persuasive of
Examiner error as it does not appear to be consistent with the Examiner's
rejection.
The Examiner finds: feed barrel 4, which includes recess portion 12,
corresponds to the claimed "test-sensor extractor"; magazine door 52
corresponds to the claimed "lid"; test strips 16 correspond to the claimed
"the plurality of test sensors"; and the "opening of the magazine that allows
a strip [16] to exit and blocked by door member [52]" corresponds to the
claimed opening. Final Act. 3. The Examiner finds that Maisey's Figure 16
shows magazine door 52 in a closed position (i.e., a first position) because
the opening where test strips 16 pass through is closed. See id.; Maisey ,r 65
("door 52 is closed, the door seal 66 protects test strips 16 from atmospheric
moisture" (emphasis omitted)). Final Act. 3. The Examiner finds that
Maisey's Figure 18b shows magazine door 52 in an open position (i.e., a
second position) due to the opening where test strips 16 pass through being
open. See id. The movement of magazine door 52 from the closed position
( as shown in Figure 16) to the open position ( as shown in Figure 18b)
extracts a test strip at least partially through the opening of the magazine
allowing a test strip 16 to exit the magazine. The foregoing findings are
adequately supported.
Thus, we sustain the Examiner's rejection of claim 188 as anticipated
by Maisey. The Appellants provide a separate heading, but lack further
arguments for the rejections of claims 189, 190, 192, and 194--201, which
depend from claim 188. Br. 10-11. Thus, we sustain the rejections of
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dependent claims 189, 190, 192, and 194--201 as anticipated by Maisey or as
unpatentable over Maisey and Moerman or Otake. Id.
Independent Claim 193
The Appellants rely on the arguments provided for the rejection of
independent claim 188 for the rejection of independent claim 193. Id. at 11.
The Appellants' arguments are not persuasive for similar reasons as those
discussed above.
Specific to claim 193, the Appellants argue "Maisey does not disclose,
teach or suggest 'wherein the lid forms at least one notch to assist in
providing clearance for the mechanical linkage between the lid and the test-
sensor extractor' recited in independent claim 193" because Maisey's "door
52 includes arms 58 (which are not notches) in which pulling or pushing on
an arm 58 causes the door 52 to pivot." Id. (citing Maisey ,r 65). The
Appellants' argument is not persuasive of Examiner error. The Examiner
finds that Maisey's "lid forms a notch by way of U shaped member 5 8
which provides clearance for members 64 which are journaled" and "notes
that member 64 is journaled to the arms 58." Ans. 5 ( citing Maisey,
Fig. 16). The Examiner's finding is adequately supported.
Thus, we sustain the Examiner's rejection of independent claim 193
as anticipated by Maisey.
Independent Claim 202 and Dependent Claims 203-206 and 208
Independent claim 202, similar to independent claim 188, recites
"wherein movement of the test-sensor extractor from the first position to the
second position moves the lid from the closed position to the open position
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Application 12/700,455
and causes at least one of the plurality of test sensors to proceed at least
partially through the opening." The Appellants rely on the arguments
provided for the rejection of independent claim 188 for the rejection of
independent claim 202. Br. 12. The Appellants' arguments are not
persuasive for similar reasons as those discussed above. Thus, we sustain
the Examiner's rejection of independent claim 2 02 as anticipated by Maisey.
The Appellants provide a separate heading, but lack further arguments for
the rejection of claims 203-206 and 208, which depend from claim 202. Id.
Thus, we sustain the rejection of dependent claims 203-206 and 208 as
anticipated by Maisey.
DECISION
We AFFIRM the Examiner's decision rejecting claims 188-190, 192-
206, and 208.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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